Check whether you can use and protect the name

“The name is free” can mean very different things. Before relying on that statement, establish who gave it, what it concerns and which search it follows.

For .lu, DNS Luxembourg explains that registration alone does not confer a right to use the name. Applicants must check for possible conflicts with third-party rights. An available address therefore does not validate the business name.

The name availability certificate issued by Luxembourg Business Registers answers another question. It compares the requested company name with those of entities already entered in the Trade and Companies Register, or RCS. A certificate showing the name as available does not reserve it or replace a trade mark search.

Sources: [1] [2]

A word cannot be assessed in isolation. It needs to be considered in relation to the goods and services concerned and the territories in which rights may have effect.

For our workshop, “cycling activity” is too vague. Will it repair bicycles, sell second-hand models, offer rentals or organise rides? Describe the launch offer and any developments already being prepared. This gives meaning to the results you encounter.

Trade mark goods and services are grouped into categories called classes. These help organise applications and searches. Start by describing your activity precisely in ordinary language. Choosing the wording and understanding its scope require more than a class number.

There is no national trade mark filing limited to Luxembourg alone. A Benelux trade mark covers all three countries. The appropriate protection depends on your activities and intended markets.

A website being accessible abroad does not mean that your project targets every country. Specify where you intend to sell, deliver, provide services or communicate with customers. A local repair service in Luxembourg and planned bicycle sales into neighbouring countries call for different working scopes.

Sources: [3] [4] [5] [6] [7] [8]

Start with the name as you intend to use it. Then search for variants that remain similar in spelling, sound or meaning. An exact search is a first step. A spelling difference is not enough to end the examination.

For Second Spin, you could search the complete expression, then variations in spacing or plural forms. The languages of the project may reveal further similarities to consider. The aim is to identify what a search limited to the exact name could miss.

Consult the Benelux trade marks register and other relevant tools for your geographical scope. TMview brings together data from participating offices and supports broader searches. Check which offices are covered and open the detailed records of useful results.

For each result worth examining, record the name and any graphic elements, holder, goods and services, territory, status and dates. A pending application and a registered trade mark need to be read differently. Keep the link and access date so you can retrieve what you saw.

Add company registers and visible uses in search engines, directories, websites and signage. The rights to examine are not limited to registered trade marks. A trade name, company name or domain name in use may also be relevant.

Imagine a search around Second Spin reveals a pending trade mark application for a similar name. Here is how you could read the record and prepare questions for further examination.

This would reveal similarities in name, activity and territory that need assessment. It would not, on its own, establish that you must abandon Second Spin. Conversely, a different activity or the absence of an identical name would not automatically establish that every use is possible.

Sources: [9] [3] [10] [11] [12] [13]

Using a name and filing it as a trade mark are separate decisions. Filing is not a compulsory formality for every business choosing a trade name. It serves a protection objective that should be assessed for the project. Deciding against filing does not remove the need to examine other people’s rights in the name you intend to use.

A name may suit you without being eligible for trade mark registration. In particular, it must allow the public to recognise your business’s goods or services and distinguish them from those of others. This is called distinctiveness. A name that simply describes the relevant activity or goods may be refused registration.

For our workshop, an expression such as “Bicycle repairs” directly explains the service. That clarity may help customers, but it does not make the expression eligible for protection as a word mark. Conversely, inventing a word does not prove availability. It may still resemble an earlier trade mark.

Specify what you want to protect, whether the name in ordinary characters, a logo or a combination. Filing a graphic combination does not establish that the words alone receive the same scope of protection. The application should match what you intend to use and defend.

In the Benelux procedure, the office examines, among other things, whether the trade mark meets registration requirements. Earlier trade marks raise a separate question and may be relied on by their holders in an opposition. Passing one procedural stage does not replace your preliminary work on existing rights.

Sources: [3] [14] [8]

After the searches, you should be able to distinguish what you know, what remains uncertain and what conditions the next steps. Organise your findings around these three questions.

For the workshop, a similar name found in the Benelux would become a specific question to resolve before confirming the sign. The information gathered helps focus the assessment.

If you receive a refusal, opposition or demand to stop using the name, keep the complete document and its receipt date. Have the applicable procedure and deadline identified before responding.

When an obstacle is confirmed, compare the possible responses and their consequences for the project. That is the subject of the next article.

Sources: [13]